Milwaukee Electric Tool Corporation v. Klein Tools, Inc.

This case, PGR2025-00080, involves a Post Grant Review (PGR) petition filed by Milwaukee Electric Tool Corporation against Klein Tools, Inc. before the Patent Trial and Appeal Board (PTAB). Milwaukee Electric Tool Corporation is an American multi-national company renowned for developing, manufacturing, and marketing power tools, hand tools, tool accessories, tool storage, and personal protective equipment, operating as a subsidiary of the TTI Group. Klein Tools, Inc. is a privately owned American company specializing in hand tool manufacturing, particularly popular within the electrical and telecommunications industries. Both are significant operating companies in the competitive tool industry.

The PGR is linked to broader patent infringement disputes between these two industry players concerning modular tool storage systems. While the PGR itself does not name a specific accused product, the dispute stems from Milwaukee Tool's allegations that Klein Tools' MODbox™ product line infringes on Milwaukee's PACKOUT™ modular storage system patents. Underlying district court litigation, such as cases filed in the U.S. District Court for the Northern District of Illinois (e.g., Case No. 1:24-cv-04284 and 1:24-cv-04928) and an International Trade Commission (ITC) investigation (Dkt. No. 337-TA-1409), have focused on patents related to these interlocking storage systems, which feature coupling mechanisms, stacking features, and locking components.

The patent at issue in this specific PGR is U.S. Patent No. 12268265. This patent is titled "Modular Storage System" and generally describes a system of interconnectable containers and components designed for organized storage and transport of tools and equipment. The procedural posture is a Post Grant Review (PGR) before the PTAB, which was filed on September 30, 2025. The PTAB ultimately issued a discretionary denial, meaning the petition was not instituted on procedural grounds. The PTAB's discretionary denials, often influenced by factors like parallel district court litigation (as outlined in Fintiv and Sotera decisions), are increasingly common and reflect the Board's authority to decline review even if substantive institution thresholds are met. This venue matters as PGRs offer a specialized, administrative avenue to challenge patent validity, distinct from district court litigation in scope and timing.

This case is notable due to the intense competition in the modular jobsite storage market, which has become a "high-value battleground" among leading tool manufacturers. The patent enforcement efforts in this area are accelerating, drawing comparisons to earlier intellectual property disputes over cordless power tool battery platforms. The discretionary denial of the PGR highlights the PTAB's evolving approach to managing overlapping validity challenges in the presence of parallel district court and ITC proceedings, a significant aspect of current U.S. patent litigation strategy.

The legal dispute between Milwaukee Electric Tool Corporation and Klein Tools, Inc. involves a patent infringement lawsuit in district court, a parallel investigation at the International Trade Commission (ITC), and a Post Grant Review (PGR) proceeding at the Patent Trial and Appeal Board (PTAB) concerning U.S. Patent No. 12,268,265.

Here's a chronological summary of the key legal developments and outcomes:

• Patent Issuance (Approx. April 2025): U.S. Patent No. 12,268,265 was issued. The subsequent PGR petition challenging this patent was filed less than six months after its issuance.
• District Court Filing (Early 2025): Milwaukee Electric Tool Corporation filed a patent infringement lawsuit against Klein Tools, Inc. in the U.S. District Court for the Northern District of Illinois, identified as Case No. 1:25-cv-00143.
• ITC Investigation Instituted (2025-03-19): A parallel investigation, No. 337-TA-1442, titled "Certain Glow Fish Tape Systems, Safety Helmet Systems, and Components Thereof," was instituted at the International Trade Commission (ITC). U.S. Patent No. 12,268,265 was later added to this ITC case through an amended complaint.
• District Court Stay Granted (Early in Case): The District Court litigation (1:25-cv-00143) was promptly stayed. The petitioner in the PGR noted that this motion to stay was unopposed and granted at the start of the case, pending a resolution of the ITC investigative proceedings. Due to the early stay, the district court case did not proceed to substantive pre-trial motions, claim construction, discovery, or trial events.
• PGR Petition Filed (2025-09-29): Milwaukee Electric Tool Corporation filed a Post Grant Review (PGR) petition, PGR2025-00080, challenging the validity of U.S. Patent No. 12,268,265 before the Patent Trial and Appeal Board (PTAB).
• PGR Discretionarily Denied (2026-02-02): The PTAB issued a "Director Discretionary Decision: Deny" for PGR2025-00080 on February 2, 2026. This discretionary denial was likely influenced by the existence of the parallel, stayed district court litigation and the ongoing ITC investigation. The petitioner had argued against discretionary denial, noting the district court stay and the non-preclusive effect of ITC decisions. This decision aligns with a broader trend in 2025 and 2026 of increased discretionary denials by the PTAB, particularly after the USPTO Director took personal control over institution decisions in October 2025.

Outcome and Current Posture:
The PGR proceeding (PGR2025-00080) was not instituted and is now terminated due to the discretionary denial. The District Court litigation (1:25-cv-00143) remains stayed, awaiting the outcome of the ITC Investigation (337-TA-1442). The ITC investigation itself has experienced delays and is ongoing. As the district court case is stayed, there have been no further developments regarding pre-trial motions, claim construction, discovery, or trial for that action.

Milwaukee Electric Tool Corporation was represented by counsel from Morgan, Lewis & Bockius LLP in the Post Grant Review (PGR) proceeding PGR2025-00080. The following attorneys were involved:

• Alexander B. Stein

  • Role: Partner, Co-Lead of the US Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) Litigation Practice.
  • Firm: Morgan, Lewis & Bockius LLP, with offices in Seattle, WA, and Palo Alto, CA.
  • Note: Mr. Stein specializes in developing winning PTAB strategies and has overseen more than 80 America Invents Act (AIA) trial proceedings, securing denial of institution in multiple IPR proceedings. His background is in software engineering, assisting clients with patent procurement, enforcement, and defense across diverse technologies including AI and machine learning.

• Jason C. White

  • Role: Partner, Co-Lead of the firm's IP technology disputes practice.
  • Firm: Morgan, Lewis & Bockius LLP, Chicago, IL.
  • Note: Mr. White handles utility and design patents and is a member of the US Patent Office Post-Grant Proceedings team, routinely litigating complex patent matters.

• Matthew M. Walker

  • Role: Associate.
  • Firm: Morgan, Lewis & Bockius LLP, Seattle, WA.
  • Note: Mr. Walker's practice includes counseling clients on patent strategy, preparation, and prosecution across various technical fields such as computer hardware and software, machine learning, and semiconductors. He also has prior experience as an in-house IP attorney at Microsoft.

• Joyce Guo

  • Role: Associate.
  • Firm: Morgan, Lewis & Bockius LLP, Palo Alto, CA.
  • Note: Ms. Guo focuses on intellectual property technology and litigation matters, particularly involving software technologies. Her experience includes drafting and prosecuting patents, and she has litigation experience in US district courts, the Federal Circuit, and the International Trade Commission (ITC), with a technical background in computer science, machine learning, and artificial intelligence.

Here is the counsel of record representing Klein Tools, Inc. in the Patent Trial and Appeal Board (PTAB) case PGR2025-00080:

Kirkland & Ellis LLP

• W. Todd Baker

  • Role: Lead Counsel
  • Firm and Office Location: Kirkland & Ellis LLP, Washington, D.C.
  • Relevant Patent Litigation Experience: An IP litigation partner with over 25 years of experience, Todd Baker focuses on post-grant matters at the USPTO, including Inter Partes Review (IPR) and Post Grant Review (PGR) proceedings before the PTAB. He has guided clients through patent portfolio management, strategic prosecution, and enforcement. He has represented clients in diverse technologies such as artificial intelligence, autonomous vehicles, clean technologies, medical devices, and wireless innovation. He successfully represented Agventure BV (Solynta) in defeating an IPR petition and has represented Klein Tools, Inc. in other USPTO matters.

• Ryan Kane

  • Role: Back-up Counsel (inferred from involvement in related PTAB proceedings for Klein Tools)
  • Firm and Office Location: Kirkland & Ellis LLP, New York, NY
  • Relevant Patent Litigation Experience: A trial lawyer with significant experience in patent litigation, including in federal courts and the U.S. International Trade Commission (ITC). He has represented clients across various industries, such as medical devices, computer software, wireless communications, and batteries. Ryan Kane has defended a leading provider of oil and gas technologies in district court and parallel patent office litigation, successfully obtaining a district court stay and invalidating key patent claims at the USPTO. He also served as back-up counsel for Klein Tools, Inc. in a co-pending IPR.

• Gregory S. Arovas

  • Role: Counsel (inferred from seeking pro hac vice admission for Klein Tools in related litigation and being an IP partner at the same firm)
  • Firm and Office Location: Kirkland & Ellis LLP, New York, NY
  • Relevant Patent Litigation Experience: Recognized as a top intellectual property litigation lawyer, Greg Arovas has represented both plaintiffs and defendants in high-profile patent and trade secret litigations. He has tried numerous district court and ITC cases to verdict across a wide range of technologies, including computer, software, communications, and medical products. He is registered to practice before the United States Patent and Trademark Office.

• Alan M. Rabinowitz

  • Role: Counsel (inferred from seeking pro hac vice admission for Klein Tools in related litigation and being an IP partner at the same firm)
  • Firm and Office Location: Kirkland & Ellis LLP, New York, NY
  • Relevant Patent Litigation Experience: A partner in Kirkland's Intellectual Property Litigation Group, Alan Rabinowitz focuses on complex patent matters before federal district courts, the International Trade Commission (ITC), and the United States Patent and Trademark Office (USPTO). His experience covers a broad range of technologies, including telecommunications, computer graphics, image processing, semiconductor fabrication, and medical devices.

• Paul F. Brinkman

  • Role: Counsel (inferred from seeking pro hac vice admission for Klein Tools in related litigation and being an IP partner at the same firm)
  • Firm and Office Location: Kirkland & Ellis LLP, Washington, D.C.
  • Relevant Patent Litigation Experience: An intellectual property partner focusing on Section 337 litigation before the U.S. International Trade Commission (ITC). He has a strong track record, having won 17 of 19 trials at the ITC and successfully settled many more. He is noted for his expertise in international trade and has been profiled as an "International Trade MVP" by Law360.